NIZAM’S wins the Trade Mark Battle
March 30, 2019
Biswajit Sarkar - IP Law Firm India
Post time: 9:08 am
The mark “NIZAM” was used by the plaintiff, Rajesh Chugh for the business of selling “kebabs”
and other related food items. The plaintiff has claimed that due to the extensive use of the mark
and high quality of food items sold under this brand, it has become exclusively associated with
his business.
Mr. Poplai who was operating a franchise of Mr. Rajesh Chugh’s “NIZAM” was unauthorisedly
using the mark after the termination of the franchise agreement. Mr. Poplai’s new logo had the
word ‘Nizam’ written prominently, making it deceptively similar to Mr. Rajesh Chugh’s mark.
Mr. Poplai was using the mark on his website www.nizams.com, food delivery apps like Swiggy,
Zomato, etc. and had also applied for registration of the mark ‘New Nizam’s Kababs and
Biriyani’ claiming use since the time he was operating the franchise of Mr. Rajesh Chugh.
The Single Judge of the High Court held that there was a prima facie case of infringement and
passing off.
In the appeal, the Court stated that since both the marks were deceptively similar and dealt in
similar goods, there was a likelihood of confusion among the consumers. Mr. Poplai contended
that “Nizam” is a generic word and no one can claim monopolistic rights over the same.
However, Mr. Poplai had himself applied for the mark ‘Nizam’ and therefore he was stopped
from claiming that ‘Nizam’ is a generic word, according to the case of Neon Laboratories v.
Thermis Medicare Ltd. 2014(60) PTC 621(Bom) where it was held that a party cannot take a plea of a mark being common to the trade when he himself has applied for the same.
Mr. Poplai’s next argument was that Mr. Rajesh Chugh has not restrained a party in Calcutta from using the mark and has, therefore, acquiesced infringement of the same. The Court did not
find merit in this argument as it observed that the party in Calcutta has confined its registration
and use of the mark only to the state of West Bengal. Therefore, the appeal was dismissed and
the order of the learned Single Judge of the High Court was upheld.
